Biswajit Sarkar

The firm Biswajit Sarkar was established in 1990 in Kolkata, India as an Intellectual Property Law Firm. Our exposure to the complexities in the ambit of Intellectual Property Law gave us the impetus and inspiration to diversify into other streams such as Corporate Affairs, International Trade and Information Technology.

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Registration of Trademark: The Indian Context.

What is a registration of trademark?

Trademark registration is not a mandate under the Indian trademark law, however it is advisable to go for a registration for certain reasons. A registered trademark has greater legal protection as in cases of infringement under Section 29 of the Trademark Act, 1999, the proprietor of a registered mark can file a trademark infringement lawsuit seeking remedies. Under Section 31, the registration certificate of the trademark serves as an evidence during infringement lawsuits.

Procedure of Registration

There are several steps in the registration process of trademarks in India and the application procedure is laid down by the Trademarks Act, 1999 and Trademark Rules, 2017. The Act through Section 18 empowers the proprietor of the mark to file the application for its registration. The following steps are to be undertaken in order to get a mark registered as trademark under Indian trademark law:

a. Trademark Search- It is the initial step to make a trademark search even before making an application for trademark registration. The trademark of the proprietor or the mark that the proprietor seeks to get a registration for has to be first checked for similarity with any other mark. This search is done in order to prevent a new mark running risk of being deceptively similar to an older mark and getting rejected by the Registrar.  Online trademark databases and the trademark database maintained by the Registry can be searched in order to prevent filing registration for a mark similar to an already registered mark.

The search has to be made in such a way that similarities with respect to a word mark, phonetic similarities and similarities in the classes of goods or services for which the newer mark and the previously registered old mark exists are found and compared. This step makes the trademark registration application fool-prove and eliminates the probability of rejection by the Register on the grounds of similarities with another existing mark.

b. Filing of Trademark Registration Application: The next step is to file the trademark registration application with the Trademark Registrar via TM-A. The application will be submitted with the prescribed fee and should be in written format containing details of name of the mark, goods or services the mark will be representing, the classes under which such goods or services falls and personal details of the proprietor of the mark and the date and place of filing has to be provided too.  A graphical representation of the mark has to be submitted along with the application. The documents such as the Power of Attorney and those which evidence the commercial presence of the mark in the market must be attached in the application form.

c. Trademark Examination- The trademark registration application filed is examined by the Examiner to find out if there are any deviations from the criteria of registrable trademarks in India and if the mark in the application is either similar or identical to any earlier registered mark. The applications are checked for the presence of any grounds of rejection for registration application provided under Section 9 and Section 11 of the Act, as these two sections lay down the absolute and relative grounds for refusal to grant registration to trademarks in India.

Then, the Examiner raises a set of objections by issuing examination report to the Applicant. In case, the mark can be registered with some conditions, then the proposal for conditions or amendments via TM-M are also mentioned in this report. This report is both sent to the applicant and posted on the official website of the Trademark Office.

d. Reply to the Examination Report- Post the examination step comes the step where the applicant replies to the objections raised in the report. The response of the applicant is considered, if upon such consideration the objections can be waived off based then the trademark is accepted for registration and published in the trademark journal and any one among the general public, business owners, brand owners etc, can oppose the trademark within 4 months of the publication being made.

If such objections are not raised and even if raised are resolved, then it gets the green-signal for registration and the registration certificate with the seal of the Trademark Office is issued. In case, the objections raised through the examination report is not resolved by the reply from the applicant then a show cause hearing is scheduled, and the applicant is given an opportunity to be heard.

Conclusion These above mentioned steps are the way in which a trademark registration procedure is carried out in India. The entire procedure takes up to 12-18 months, however, it can take longer if there are objections that need to be resolved. Registration of a trademark can be renewed indefinitely after every ten years for protection of one’s business identity and is highly advised in an era of fierce market competition.

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Laws Surrounding the Intellectual Property of NFTs in India

Introduction

With the Indian Government recently putting a 30% tax on any profit earned through the cryptocurrency market, how far along is it that the fate of NFTs will be sealed the same way? Just like crypto, NFTs use blockchain technology such as Ethereum and smart contacts (Binance Smart Chain), creating unique digital signatures making it very secure.

Currently, a bill is making its rounds in the parliament, called, Banning of Cryptocurrency & Regulation of Official Digital Currency Bill, 2021. Which seeks to prohibit mining, generating, selling, holding, transferring, disposing of, dealing in, issuing of, or using Cryptocurrency in India. Cryptocurrencies in India have a Trillion-Dollar Market value, but there will be a shift in paradigm given the current scenario of the legislative bodies trying to regulate this newly popularised market.

NFTs, although they operate on similar blockchain technology such as cryptocurrencies, could not be any more dissimilar. NFTs include digital assets and other intellectual property like images, video files, audio files that one could purchase and hold exclusive rights to, while cryptocurrencies are fundamentally used to purchase such exclusive tokens.

Laws Governing NFTs

The Indian Contract Act, 1872– Just like an auction, the NFT sellers list the assets and an agreement is created enumerating the rights of the buyer/buyers through digital means. Upon the finalization of the sale, the agreement is enforceable as a contract under the provisions of the Indian Contract Act, 1872.

The Copyright Act, 1957- Just like the creators of any art, the creators of these digital assets are protected under the Copyright Act of 1957. These rights uphold the same moral rights as in any other case, enabling the author of such NFTs, the right to claim authorship of his work; and the right to restrain his work from being distorted, mutilated, modified, or altered and to claim damages for the same distortion, mutilation, modification or alteration.

Conclusion

With the most valued NFT sold at 11.7 Million Dollars, it is clear that NFTs will continue to have a bright future in the capitalist space. However, the solution to regulate the market should lie in innovative regulatory laws and not its perpetual obliteration through banning the market.

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Santa Clause and IP

Introduction

Christmas memories are usually filled with Santa Claus, be it him being featured in Christmas movie, or a graphical depiction of him being used on various products ranging from clothes, cake boxes, packaging of various products etc. However, the question which arises, if the character of Santa Claus is so widely used and to gain commercially benefits by attracting consumers, then who owns it and how is the intellectual property rights of the proprietor protected.

Santa Claus and Copyright

Santa Claus art works which are often used by brands to promote their Christmas related products can be protected copyright law. It is important to note that the copyright protection shall not be given to the character of Santa Claus to the artist but he will be accorded with the copyright protection over his particular drawing or his particular artistic depiction of Santa Claus only. The depiction of Santa Claus in Coca-Cola’s winter advertisement was done by artist Haddon Sundblom but because this artistic work was based on a real person, it could not be granted copyright protection as it was not unique. However, if an artist comes up with an original depiction of Santa Claus then it shall be copyright protected on account of being an original artistic work of that artist. Commercial exploitation of Santa Clause depicted in any unique way can be done without attracting IP violations as no particular person or entity owns the character of Santa Claus.

Santa claus and Trade mark

Coming to the prospect of trademark protection for using the word “Santa Claus” or the character of Santa Claus being used to identify the products or services of one brand from another, U.S has several registered trademarks depicting various creative images of Santa Claus. Since, there are so many trademarks of Santa Claus being registered and used during Christmas season, the function of a trademark to distinguish the products belonging to one brand from another may be questioned. To resolve any confusion, it has to be noted that all these trademarks depicting Santa Claus have some other element attached to it which distinguishes it from any other Santa Claus trademark and clears out any chance of deception. Most trademarks registered in the U.S depicting Santa Claus have another word mark or graphical mark included which fulfills the criteria of distinctiveness and is capable to be protected under trademark law.

Conclusion

Hence it can be concluded by saying that the marks of any criteria are capable of being registered if they have qualified the essentials of distinctiveness and also are not arising in any form of likelihood of confusion.

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The firm Biswajit Sarkar was established in 1990 in Kolkata, India as an Intellectual Property Law Firm. Our exposure to the complexities in the ambit of Intellectual Property Law gave us the impetus and inspiration to diversify into other streams such as Corporate Affairs, International Trade and Information Technology. Our Services: 1] TRADE MARK SERVICES

2] PATENT SERVICES

3] COPYRIGHT SERVICES

4] DESIGNS SERVICES

5] GEOGRAPHICAL INDICATIONS SERVICES

The firm Biswajit Sarkar was established in 1990 in Kolkata, India as an Intellectual Property Law Firm. Our exposure to the complexities in the ambit of Intellectual Property Law gave us the impetus and inspiration to diversify into other streams such as Corporate Affairs, International Trade and Information Technology. Our Services: 1] TRADE MARK SERVICES

2] PATENT SERVICES

3] COPYRIGHT SERVICES

4] DESIGNS SERVICES

5] GEOGRAPHICAL INDICATIONS SERVICES

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Copyright Infringement in edited photographs

Photographs are under the subject matter of copyright which means that photographs are artistic works that attract copyright protection. The author of an artistic work, in case of a photograph, is the author who has originally captured the photograph, and is deemed to be the original owner of the photograph and thereby made the holder of copyright.

In India, photographs enjoy copyright protection under Section 2 (c) i of the Copyright Act, 1957, which mentions the certain types of artistic works granted copyright protection in India. In USA, the person who presses the shutter button of a camera becomes the copyright holder of the photograph, in certain cases the person who sets up the camera has also been held as the copyright holder of the photograph.

more info:- https://www.biswajitsarkar.com/blog/copyright-infringement-in-edited-photographs.html

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Trademark Assignment

The trademarks can be transferred to the third parties as the owner may deem fit either by way of an assignment or licensing. Trademark Assignment is a kind of transfer of the rights where the owner of a trademark would assign the rights of the trademark to the third party. Section 2 (1)(b) of the Trademarks Act, 1999 has defined “assignment” as a kind of agreement in writing to the concerned parties. Assignment could be initiated both in terms of a registered and unregistered trademarks.

Section 37 of the Trademarks Act, 1999 deals with the procedure of assignment of trademark, wherein the registered proprietor of trademark has been accorded with the rights to assign the trademark to the assignee, and the person who is transferring those rights is referred to as the assignor.

The essentials of trademark assignment are:

There must be two parties involved, the one who is transferring the rights i.e., assignor and the one who is receiving it is referred to as the assignee.

There must be a consent involved.

There should be a proper and adequate consideration.

A proper assignment agreement should be executed, which must be in writing.

Thus, in order to execute the assignment agreement, there is a need for the parties to hire a proper trademark attorney, who would be aware of all the rights and would guide the person seeking for advice.

The trademarks can be transferred to the third parties as the owner may deem fit either by way of an assignment or licensing. Trademark Assignment is a kind of transfer of the rights where the owner of a trademark would assign the rights of the trademark to the third party. Section 2 (1)(b) of the Trademarks Act, 1999 has defined “assignment” as a kind of agreement in writing to the concerned parties. Assignment could be initiated both in terms of a registered and unregistered trademarks.

Section 37 of the Trademarks Act, 1999 deals with the procedure of assignment of trademark, wherein the registered proprietor of trademark has been accorded with the rights to assign the trademark to the assignee, and the person who is transferring those rights is referred to as the assignor.

The essentials of trademark assignment are:

There must be two parties involved, the one who is transferring the rights i.e., assignor and the one who is receiving it is referred to as the assignee.

There must be a consent involved.

There should be a proper and adequate consideration.

A proper assignment agreement should be executed, which must be in writing.

Thus, in order to execute the assignment agreement, there is a need for the parties to hire a proper trademark attorney, who would be aware of all the rights and would guide the person seeking for advice.

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A trademark is a unique sign that identifies the goods or services of one business and distinguishes them from others. The procedure for trademark registration in India is provided in the Trade Marks Act, 1999. It is important to register a trade mark to get benefits of such registration.

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Copyright Ownership

Copyright has been defined as the right accorded by the lawmakers to the creators of literary, musical, artistic, and producers of cinematographic films and sound recordings. It has been referred to as the bundle of rights which provides the rights of exclusivity and the rights of ownership to the original owners and authors of the work. The protection of copyright is granted immediately once the work with the essentials of originality and creativity. Copyright can be owned by the person who has produced and made the work by his own strives with his labor, judgment, mind, and creativity.

The creator or the author of any kind of work involving originality and creativity has been considered as the real owner of the work. The various fundamentals related to ownership in a copyrighted work can be discussed below:

Section 2(d) of the Copyright Act, 1957 has defined the term ‘author’ as the person who is responsible for the creation of the work with respect to literary, musical, artistic, and cinematographic, but only if the work is original and creative. The author has been relatively defined as:

Author in case of literary and dramatic work.

Composer in case of a musical work.

Artist in case of artistic work.

Person taking the photograph in case of a photograph.

Producer in case of a cinematographic film or a sound recording.

Artist or an architect in case of artistic craftsmanship or other architectural work.

Section 17 of the Act has precisely defined that the author of the work shall be considered as the first owner of the copyright. In circumstances, where the work has been done by a person in the course of employment or as per the terms and conditions, then that person would be considered as the author or the owner of the work.

Section 2(z) has precisely stated joint ownership. The concept states that if the work has been produced by collaborative efforts, then the authors involved in the creation of the work would be liable for copyright protection and for the rights of joint ownership.

The rights of ownership available for the owners of copyright are:

Rights of reproduction in a copyrighted work: The law of copyright has accorded the rights of reproducing the authored work upon the assessee, which means that only the author of the work would be responsible for making a copy of his or originally produced work. For example, a person making the film i.e., the producer would only be liable for making copies of the films with his own will and consent. But if a person makes copies of the films without any prior permission of the author, then he would be held liable for piracy i.e., copyright infringement.

Communication to the public: The original owner of the work in compliance with his own rights has the right of making the work available to the general public for the purposes of being heard or seen. However, it is not necessary that the work has to be actually heard or seen by the public. The criteria of making the work available in the public domain are enough for communication rights.

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We are a full-fledged law firm with national and international presence. We handle matters related to Intellectual Property Rights. Our exposure to the complexities in the ambit of Intellectual Property Law gave us the impetus and inspiration to diversify into other streams such as Corporate Affairs, International Trade and Information Technology. Our firm was established in the year 1990 at Kolkata and since then we are continuously growing through our various offices in India and abroad. Our professional team is having vast experience in handling the routine matters and the complicated cases in the field of Intellectual Property Rights Our clientele is located worldwide and is ranging from individuals to some of the most renowned companies globally.

More Details:- https://www.biswajitsarkar.com

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The firm Biswajit Sarkar was established in 1990 in Kolkata, India as an Intellectual Property Law Firm. Our exposure to the complexities in the ambit of Intellectual Property Law gave us the impetus and inspiration to diversify into other streams such as Corporate Affairs, International Trade and Information Technology.

More Details:- https://www.biswajitsarkar.com

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Copyright Search

The copyright search forms the basic step of copyright registration. The copyright search is conducted by the legal representative of the Applicant, to check if the same work has been published or has been made available to the public at large. However, the person can only proceed with the process of the registration of his work, if his work is original and creative.  Supposedly, if an individual wants to create any work in the form of a song, book, or a painting, then he must approach an IPR Attorney, who will conduct a copyright search to check if the work created by him and is complying with the principles of originality and creativity.

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Do you know what is the Patent Infringement ?

A patent is a right granted to the owner or inventor of an invention. The exclusive nature of patents allows the patentee to prevent others from practicing or using the patented invention. The patentee has two main rights qua the grant of patent, namely, assigning or licensing the right, in part or in whole and protect his invention from infringement.

An infringement of a patent means the unauthorized use or exploitation of a patented invention by a third party. There are various types of patent infringement. They are as follows:

Literal infringement has been categorized under direct infringement and means that if each and every component in the patent specification has been used in alleged infringement in a product or a process.

Induced infringement is a type of infringement in which the infringer does not directly infringe a patent but influences and coerces the other person for committing the offense of infringement.

Contributory infringement has been referred to as a type of infringement in which the person is contributing to the unauthorized use of a product or process patent of the holder.

The initiative of enforcing a patent right is upon the patentee. In the case of infringement, the burden of proof is upon the plaintiff. A patent owner can seek relief under the Section 108 of the Patent Act, 1940 in the form of injunctions and damages.

If you have any queries related to IPR, and want to get your works registered, kindly contact us through our website www.biswajitsarkar.com.

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The Michigan based car company, Ford has filed for 19 trade mark applications with respect to virtual cars and NFT for the purpose of protecting their virtual vehicles as well as digital clothing and other accessories to be used in the virtual worlds. The company has also filed for trade mark applications for NFT that would help in the featuring of artwork, text, audio and video of their cars as well.

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“Copyright Search”

The copyright search forms the basic step of copyright registration. The copyright search is conducted by the applicant or his legal representative, to check if the same work has been published or has been made available to the public at large. However, the person can only proceed with the process of the copyright search, if he is of the view that his work is original and creative. Supposedly, if an individual wants to create any work in the form of a song, book or a painting, then he can conduct a copyright search to check if the work created by him is complying with the principles of originality and creativity. The Applicant has the right to get his works registered in the context of literary, artistic, musical, sound recordings, computer software and cinematographic etc. If the search states that the work produced by the applicant is similar to the already registered copyright, then the owner of that work would be liable for suing for infringement and also for further claiming damages for the same. The copyright search in India can be conducted in the following ways: i. The copyright office has been recognized as the source for all the different forms of copyright records. Firstly, logon the original website for copyright i.e., https://copyright.gov.in/ ii. Secondly, the work can be searched by filling up the diary number, registration number, name of the applicant and the title of the work. iii. Thirdly, it’s not mandatory to fill up all the mentioned details, the search can also be conducted by filing up any of the determinants. iv. After that, the person needs to click on ‘Search’ and thus the works would be displayed showing all the necessary list of matching copyrights. v. Henceforth, after a proper search is conducted then the applicant who conducted a search would be able to see all the necessary details stating the application number, status of the application and so on. The copyright search helps the applicant to keep a check on his application and follow up his case so that he is updated with all the necessary changes that are being made in his filed copyright application. It is important to note here that the person doing a copyright search must be determined for what exactly he is looking for, and that the search related to copyright must be narrow and precise and it must be guided by a legal professional, or an advocate.

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Biswajit Sarkar IP Law